Fitness International, LLC v. Domain Administrator / China Capital Investment Limited
Claim Number: FA1704001729056
Complainant is Fitness International, LLC (“Complainant”), represented by Kristin B. Kosinski, California, USA. Respondent is Domain Administrator / China Capital Investment Limited (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lafitnessgymn.com>, registered with Interweb Advertising D.B.A. Profile Builder.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 26, 2017; the Forum received payment on April 26, 2017.
On May 2, 2017, Interweb Advertising D.B.A. Profile Builder confirmed by e-mail to the Forum that the <lafitnessgymn.com> domain name is registered with Interweb Advertising D.B.A. Profile Builder and that Respondent is the current registrant of the name. Interweb Advertising D.B.A. Profile Builder has verified that Respondent is bound by the Interweb Advertising D.B.A. Profile Builder registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 4, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@lafitnessgymn.com. Also on May 4, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, Fitness International, LLC, is a large entity in the fitness club industry located in Irvine, California, USA. In connection with this business, Complainant uses the LA FITNESS mark to promote its goods and services. Complainant has rights in the mark based upon its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,806,464, registered Nov. 23, 1993).
2. Respondent’s <lafitnessgymn.com> domain name[1] is confusingly similar to Complainant’s mark as it contains the mark in its entirety, less the space, and adds the descriptive term “gym” along with the generic top-level domain “.com.”
3. Respondent lacks rights and legitimate interests in the domain name. Respondent is not commonly known by the <lafitnessgymn.com> domain name, and has no affiliation with Complainant. Complainant has not authorized Respondent to use the marks for any purpose, and Respondent holds no license to use the mark.
4. Respondent has also failed to use it in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, the domain name resolves to a parked web page with links to competitors.
5. Respondent registered and uses <lafitnessgymn.com> in bad faith. Respondent intentionally attracts Internet users for Respondent’s commercial gain through the confusion created as to the ownership of the domain name. Similarly, on the resolving webpage for the domain name, Respondent provides links to services in direct competition with Complainant.
6. Further, Respondent is a serial cybersquatter who admitted in a different matter that it purchases domain names in bulk, and the registrant on the WHOIS is connected with 204,991 domain names. Additionally, Respondent failed to respond to numerous letters and emails Complainant sent to Respondent in efforts to avoid further disputes such as the present proceeding.
7. Finally, Respondent must have had actual knowledge of Complainant’s LA FITNESS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the LA FITNESS mark. Respondent’s domain name is confusingly similar to Complainant’s LA FITNESS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <lafitnessgymn.com> domain name and that Respondent registered and uses the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the mark based upon its registration with the USPTO (Reg. No. 1,806,464, registered Nov. 23, 1993). Registration of a mark with a trademark authority such as the USPTO is sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark.”).
Next, Complainant argues Respondent’s domain name is confusingly similar to Complainant’s mark as it contains the mark in its entirety, less the space, and adds the descriptive term “gym” and the gTLD “.com.” Removal of a space from a mark does not sufficiently differentiate between the mark and the resulting domain name; likewise, addition of a gTLD and a descriptive term does not sufficiently differentiate per Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”) see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where domain name contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain). The Panel therefore finds Respondent’s domain name is confusingly similar to Complainant’s LA FITNESS mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <lafitnessgymn.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues Respondent is not commonly known by the <lafitnessgymn.com> domain name. WHOIS information can substantiate a finding that a respondent is not commonly known by a domain name; similarly, use of a WHOIS privacy service can be further evidence that a respondent is not commonly known by a domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum January 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). The WHOIS information of record names the registrant as “Domain Administrator.” Complainant further states that Respondent has no affiliation with Complainant; Complainant has not authorized Respondent to use the mark for any purpose; and Respondent holds no license to use the LA FITNESS mark. The Panel therefore finds Respondent is not commonly known by the <lafitnessgymn.com> domain name.
Next, Complainant argues Respondent failed to use the <lafitnessgymn.com> domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, the domain name resolves to a parked web page with links to competitors. Use of a confusingly similar domain name to resolve to competing links is not a use indicative of rights and legitimate interests per Policy ¶¶ 4(c)(i) & (iii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). The Panel therefore agrees and finds that Respondent does not use the <lafitnessgymn.com> domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered the <lafitnessgymn.com> domain name in bad faith, as evidenced by Respondent’s propensity for registering numerous domain names in bad faith. A complainant may use serial cybersquatting to show bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum November 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant has provided uncontradicted evidence that Respondent’s contact information listed on the WHOIS is connected with over 200,000 domain names. Accordingly, the Panel finds that Respondent registered the <lafitnessgymn.com> domain name in bad faith by engaging in cybersquatting.
Complainant further argues that Respondent registered and uses the <lafitnessgymn.com> domain name in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the domain name to commercially benefit Respondent by offering competing goods or services. Such conduct may constitute bad faith registration and use. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum October 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant has shown that Respondent uses the LA FITNESS mark in the <lafitnessgymn.com> domain name to attract users seeking Complainant’s products, and instead offers links to competing products or services on the resolving webpage, which disrupts Complainant’s business. The Panel agrees that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Complainant additionally argues Respondent registered and uses <lafitnessgymn.com> in bad faith as it uses the confusingly similar domain name to resolve to a parked page containing competing links. Hosting competing links on a confusingly similar website is indicative of bad faith use per Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). Complainant provides a screenshot of the resolving page as proof of this argument. The screenshot shows links for services such as “Fitness Center Gym” and “Work Out Gym Near Me.” The Panel therefore finds that Respondent acted in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant lastly claims that Respondent had actual knowledge of Complainant’s mark. Actual knowledge of a complainant’s mark adequately shows bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel concludes that Respondent undoubtedly had actual knowledge of the LA FITNESS mark because the domain name includes the mark in its entirety thereby demonstrating bad faith registration under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lafitnessgymn.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson Panelist
Dated: June 1, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page